A Brazilian company called Gradiente has managed to get a
Brazilian trade mark registration for the mark iPhone for cell
phones. To make matters worse for Apple, Gradiente is selling
an Android- powered iPhone cell phone in Brazil - Android is the
operating system of Apple's fierce competitor, Google, and
there has, of course, been well-publicised 'proxy patent
litigation' between Apple and Samsung, another Android
user. The press statement issued by the Brazilian company
suggests that it anticipates doing a deal with Apple, which will no
doubt involve Apple buying the Brazilian trade mark registration
for big bucks.
Apple suffered a similar set-back a few years ago, when it started selling iPad in China without a trade mark registration. What happened there was that, as part of its worldwide clearance exercise, Apple bought certain registrations for the mark iPad from a Taiwanese company. Apple mistakenly believed that, amongst these registrations, was a registration for China - in fact there were simply registrations for the EU, Taiwan and South Korea, and Apple tried to explain this oversight on the basis that the documentation had been in Mandarin. When Apple started selling iPad in China it was threatened by a company that did have the mark registered there, and it had to do a deal that was no doubt expensive.
Cases like these illustrate a serious problem that
multinationals have - they want to do business on a global scale,
but trade mark rights are geographical. Meaning that
trade marks are registered for particular countries, with the
Community Trade Mark (CTM) system that applies in the European
Union being an exception of sorts (the system co-exists with
national registration systems in the member countries), and the
OAPI system which applies in French-speaking Africa being
This makes worldwide trade mark clearance difficult and expensive. For example, you may find that the mark that you have in mind is available in some of the countries where you want to do business, but not in others. What to do? One option is to abandon the mark altogether and come up with something new. Another is to use different marks in different countries – not unheard of, but generally thought to be undesirable, and clearly not the best way to build brand value. A third option is to seek to buy the registrations that exist. But they may belong to more than one company and, whereas some owners may be open to negotiation, others may not.
Perhaps we will one day have a truly international trade mark registration system (the one that exists now, the Madrid system, is simply a method of getting registrations in individual countries through a central body). But that day is probably quite some time off.
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